WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) v. Yurii Yakovlev, Perakt, LLC

Case No. D2018-0453

1. The Parties

The Complainant is Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) of Tokyo, Japan, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Yurii Yakovlev, Perakt, LLC of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <epson-russia.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 6, 2018, the Center sent an email to the Parties in Russian and English regarding the language of the proceeding. On March 7, 2018 the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2018.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 10, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Japanese electronics company and one of the world’s largest manufacturers of printers and imaging equipment. The Complainant operates a network of approved repair Centers throughout the world, including within the Russian Federation. Repair and support of its printers is an important revenue stream of the Complainant’s business.

The Complainant holds several trademark registrations including:

- the Russian trademark registration for EPSON No. 162594, registered on March 31, 1998 in classes 2, 9 and 16;

- the European Union trade mark registration for EPSON No. 004147229, registered on November 29, 2004 in classes 2, 9 and 16.

The Complainant operates its main global website at “www.global.epson.com”. Moreover, the Complainant has a strong presence in the Russian Federation, where the Respondent is based, and its local subsidiary company operates a Russian-focused Russian language website at “www.epson.ru” from which it sells a range of products, including hardware and consumables.

The disputed domain name was registered on November 15, 2016.

On February 6, 2018, the Complainant’s agent sent to the Respondent a cease and desist letter by recorded international delivery but did not receive a response.

The website associated with the disputed domain name resolves to a commercial website which offers printer repair services. The site features the Complainant’s logo in the top left corner and pictures of the Complainant’s products. Moreover, the website says that it is the “Official site of Epson Russia”.

The Respondent was previously party to a UDRP proceeding in which it was held to have registered and used a domain name in bad faith, see AB Electrolux v. Protection of Private Person / PERAKT, LLC, WIPO Case No. D2017-1899.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant asserts that the disputed domain name is confusingly similar to the EPSON mark as it contains this mark in its entirety with addition of the word “Russia” preceded by hyphen. The Complainant contends that the word “Russia” is a generic geographical descriptor and does nothing to distinguish the disputed domain name from the Complainant’s famous EPSON marks, which remain the dominant element of the disputed domain name. The Complainant also avers that given its presence on Russian market, the disputed domain name will be more likely to confuse web users into thinking that the disputed domain name is associated with the Complainant. Further, the Complainant points out that the domain name in the case AB Electrolux v. Protection of Private Person / PERAKT, LLC, supra (<electrolux-russia.com>) was created based on the same pattern. That the Complainant is active in that area, adds to the potential for confusion.

Secondly, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name as there is no credible evidence that the Respondent has been - or could be - commonly known by the disputed domain name. According to the Complainant, the Respondent is not a licensee of the Complainant and has not received any consent or permission from the Complainant to use its marks or names in association with the registration of, any domain name, service or product.

The Complainant contends that there is also no evidence that the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name. The Complainant emphasizes that the disputed domain name could not be used in any manner without causing widespread confusion among the Internet users.

Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the disputed domain name was registered many years after registration of the EPSON mark. Moreover, the Complainant believes that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s famous mark as to the source, affiliation and endorsement of its website or of a product or service on its website. The disputed domain name is extremely likely to confuse web users trying to find the Complainant’s official website or a member of its authorized service center and repair network. According to the Complainant, the use of the Complainant’s marks also makes a false representation, in favor of the Respondent’s business, of a commercial connection with the Complainant or endorsement by the Complainant. The Complainant also asserts that the Respondent’s registration, and any use of the disputed domain name will disrupt its business of authorized repair centers by using the EPSON mark to promote and offer unrelated third-party repair services

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that it would be burdensome and expensive for the Complainant to translate the Complaint with all its annexes into Russian.

The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant’s language request. Notification of the Compliant was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

As the disputed domain name includes the English word “Russia”, it is probable that the Respondent can communicate in English. Moreover, the Panel believes that it would be unduly burdensome to require the Complainant to invest money and time in translating the Complaint along with the annexes. In this light, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages.

6.2. Merits

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three elements. The three elements can be summarized as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the Top-Level Domain suffix “.com” may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).

The relevant part of the disputed domain name is therefore the section “epson-russia”, which contains the elements “epson” and “russia”. The “epson” element is identical to the word element of the EPSON mark, while the element “russia” is a geographical name of the country, where the Respondent is located. As noted by many previous UDRP panels, where a trademark is recognizable within the disputed domain name, the addition of other terms (including geographical terms) would not prevent a finding of confusing similarity under the first element. Here, the EPSON mark is readily identifiable within the disputed domain name.

Therefore, the Panel finds that the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use its marks; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to create a website displaying the Complainant’s mark and offering the same kind of services as the Complainant cannot be qualified as a bona fide offering of goods or services.

The Panel notes that the website at the disputed domain name purports to be the Complainant’s official website for the Russian Federation, which is simply not the case.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, the disputed domain name was registered years after the ESPON was registered. In the Panel’s opinion, the notoriety of use of the Complainant’s mark all around the world and the similarity of the disputed domain name with the mark itself indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In the Panel’s view, the inclusion of the EPSON mark together with the geographical term “Russia” in the disputed domain name may lead Internet users to believe that the disputed domain name represents an official online location of the Complainant for the Russian Federation (see AB Electrolux v. Protection of Private Person / PERAKT, LLC, supra).

Secondly, the website under the disputed domain offers repair and maintenance services for the Complainant’s products and features its EPSON mark. Such use may confuse Internet users that they are being offered repair services for the Complainant’s products by the Complainant itself. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s EPSON trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the services offered at the Respondent’s website (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388).

In the light of above, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <epson-russia.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: April 18, 2018